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STATEMENT OF STANLEY M. CLARK
Mr. Clark. My name is Stanley Clark and I am presently Patent Counsel for the Firestone Tire and Rubber Co., but I am expressing my own personal views here. I am not speaking for the company.
Senator Hart. I assume you wish to have your statement printed in full in the record ?
Mr. CLARK. Yes, I have submitted that statement and would like it to be printed in full in the record.
Senator Hart. It will be at the appropriate place.
Mr. CLARK. I had occasion to testify 2 years go in connection with the proposed Anti-Trust and Licensing Provisions known as the Scott Amendments and in the course of my testimony I had a colloquy with Senator McClellan in response to a question that he had asked and that question has come up here repeatedly; namely, why there seems to be a different standard of invention between the courts and the Patent Office and why are 70 percent or so of the patents declared invalid when they reach the courts. If I may, Senator, I would like to read just a portion of that colloquy from pages 325 and 326 of my testimony. It won't take very long and I apologize for reading it.
Mr. CLARK. *** The inventor, more particularly his patent counsel, has the time and the opportunity and the incentive far beyond the overworked patent examiner does not have; and when you add all this together it is an unfair struggle and this is why I would lend support to the Department of Justice position that the oath the inventor ought to be restored to the proposed patent bill and that the burden should be upon the applicant to be fully candid with the Patent Office.
Senator McCLELLAX. You think the law does not require that now?
Senator McCLELLAN. If it is intended to it has a lot of loopholes in it, is that correct?
Mr. CLARK. That is correct. I would suggest that the burden also be placed not only upon the inventor but upon the lawyer that is representing him. At present the burden is only upon the inventor.
Senator McCLELLAN. Why upon the lawyer?
Mr. CLARK. Because often the lawyer knows more about the prior art and is the only contact with the Patent Office. Once the inventor signs an oath, which he doesn't understand, to a patent application which he usually can't interpret, then he is through with the whole procedure and you never hear from him again.
Senator McCLELLAN. But if the applicant testifies or signs a false oath knowing it is false, maybe his attorney doesn't know that.
Mr. CLARK. That may be true. That may be true.
Senator MCCLELLAN. I don't think the attorney should be held responsible for that.
Mr. CLARK. No; but I think perhaps the attorney ought to be required on his own to make a full statement of the prior art as he knows it to the Patent Office.
Senator MCCLELLAN. In other words, you would put a burden on the attorney not to rely upon the information supplied him by his client?
Mr. CLARK, I would say if that is the only information he has he is entitled to rely upon it, but if an attorney has additional information, which he often has, sometimes these attorneys are as expert as the inventors in the art and as knowledgeable as the inventor in the art, he should disclose that information to the Patent Office.
Senator McCLELLAN. If he has additional information maybe he should rely on it or shouldn't, I don't know. But I wonder how far we are going and I am
not arguing against it at the moment, I am just trying to clarify what you are recommending with respect to placing an additional burden upon attorneys. Attorneys should not be permitted to permit fraud or to mislead, willfully mislead the court or in this instance the Patent Office, but I know that attorness are often misled by their clients and how much a burden you put upon them or you are attempting to put upon them, they have to check the veracity and reliability of their own clients. Would you go that much farther now?
Mr. CLARK. I am not suggesting that. I am saying he is entitled to rely upon what his client tells him. I suggest if he has additional information he should volunteer it himself.
Senator MCCLELLAN. Yes; if he has additional information and the client has not submitted it he shouldn't withhold that from the Patent Office.
Mr. CLARK. That is correct.
Senator McCLELLAN. I think that is not unreasonable at all. It might be proper.
Now the reason why I bring that before the Senators this morning is because several questions have been asked, all of which bear upon what I was suggesting 2 years ago and that is that the burden of the Patent Office will be lightened and the effectiveness of the Patent Office will be markedly improved if there is a fair and candid communication between the Patent Office and the applicants and the applicants' attorneys. I think that is in the public interest because stronger and better patents will issue and there will be fewer of them, I hope, declared invalid by the courts.
Let me say that this bill, S. 1321 seems to be marked by a more express concern for the public interest and to a far greater extent than our present patent law and for that matter than any other patent bill which I have ever seen presented.
I would like to refer to some of those provisions, which are pres. ent in 1321, which are in the public interest and I would like to speak a few words in support of them. In doing so I would like to answer some of the questions which have come up in the hearings in the last day or 2. To repeat, Senator, what I would like to say is that the applicant has the duty to be fully candid with the Patent Office, and, if he discharges that duty, then the burden on the Patent Office, will, in great part, also be relieved. An examiner will have more time and better patents will issue. And again, all of this is in the public interest.
Let us look at some of these mechanisms which are in 1321 which require and encourage that duty of responsibility and candor to be discharged by the applicant. First of all, I would like to refer to section 115 which provides that there be an oath by the applicant and by the attorney and by the agents acting on behalf of the applicant to lay before the Patent Office the prior art of which they are aware. Well, this is not a new view or a view peculiar to me. In the American Patent Law Association Bulletin for October of 1972, Mr. Rabinow—and I hope that is pronounced properly-he is a successful independent inventor-in that bulletin he made this statement and I quote him: "I think that the patent attorney should telland so on, and so on, in other words, he should help the Patent Office, and he shouldn't play games.”
I will skip a little bit of what he says but he concludes by saying
We always felt we should tell them-he is referring to the Patent Officeeverything we know and in saying what the prior art was, you should say what it really was because, if you don't do it you are really cheating the Patent Office.
That brings me to a second point in S.1321, which is the patentability brief. I highly support that provision. I think Mr. Rabinow's words, which I just quoted, which say that you should not play games with the Patent Office, that you should tell them what you think the invention is and why it distinguishes over the prior art in my opinion is recommending a patentability brief, for such a brief enables this function of candid communication with the Patent Office to be performed. It will not be performed absent such a brief; well, let me say it this way, it has not been performed fully in the past by applicants.
In that same "American Patent Law Association Bulletin," Mr. Dunner-and I believe I am pronouncing his name correctly—said and I will quote from page 635 of that bulletin:
I think there should be an explicit rule which requires an attorney at some appropriate stage in the application, certainly well ahead of the allowance, to file a written statement of the best public prior art he knows of.
Again that seems to me to be in support of the principle of the attorney's oath and of patentability brief.
There is one other point which may be a minor point and hasn't been brought up here and this appears in section 112 which prescribes the form of patent claim which is to be used, a form which the American Patent lawyers call a Jepson form of claim and which really follows the German form of claim prescribed by the laws of Germany. I think everybody agrees that Ġermany has a very good patent system.
Again in the bulletin of the American Patent Law Association for November-December of 1932, page 76, there is a quote, and I do quote.
A good many of the holdings that patents are invalid stem from the discoyery on the part of a district judge that the invention which the Examiner thought was a substantial forward step was in fact the tiniest little pipsqueak of change from a product that had been in public use for years and which the Examiner bad no way of learning about.
Now that is true; and, if you do not have a proper form of claim, it is often very difficult for the courts to determine what the inventive step was because that "little pipsqueak sort of change" is buried in a mass of obscure words, in very long and very difficult language. And that is the reason why I support the Jepson form of claim which is prescribed by section 112 of this bill, because if you have that form of claim and if the applicant has been candid with the Patent Office, that claim would have read in this manner. The claim would have read as follows:
(1) In a product that has been in public use for years,
If we insisted upon this form of claim, which to some may seem to be not too important, but which I think is very valuable; if we have this sort of claim presented to the examiner, it would lighten his burden because first of all he would direct his attention immediately to the final portion of the claim to see whether this "tiniest little pipsqueak change"—if that is what it was really amounted to invention and it would expedite his search of the prior art and would expedite his consideration of the application. It might do it to a very material degree. On the other hand, if the last portion of the claim was not in fact a little pipsqueak change” but was a substantial invention, its clear delineation in a Jepson claim would still help the examiner because it would expedite his search and his evaluation of the invention.
Furthermore, the patentability brief should bear directly upon that portion of the claim which comprises the invention, which comprises the foward step in the art and I assure you there are many claims that have been litigated that do not do that at all and you have to search through the language of the claim and find, if you can, what the invention is and pick it out from the prior art. I think it is most important that a patent claim be in such form that the examiner and the public and the courts will be able to understand it easily and completely.
I might also add that if the claims of a patent were in such Jepson form, and if that patent later reached the courts in a patent litigation, the court would be able to understand almost immediately just what the invention was all about. This again, is a provision which expedites the exercise of candor with the Patent Office. You are telling the examiner first by the attorney's oath and by the investor's oath that you are giving him all of the prior art of which you have knowledge; and in this form of claim you are stating precisely what your invention is; and with your patentability brief you are stating why it should be allowed.
There is one other section of S.1321 I wish to comment on; that is the examination provision in which the Patent Office, for the first time, is told explicitly to put down in the record the reasons why a patent is allowed. It is a very disturbing and infuriating experience to read the file history of a patent to find that the examiner has repeatedly rejected the claims and then suddenly you find there was an interview and without any further explanation the patent was allowed. It is allowed without any explanation of why the Patent Office changed its position after repeatedly rejecting the claims. I heartily recommend that the examination procedures of S.1321 be adopted.
Let me turn to the question of deferred examination and early publication. I approve both of those provisions without reservation. Early publication performs the function of the patent law, to inform the public, and the earlier the public is informed as to the advances in the art, the better it is for the public. As to the 6-month waiting period which is provided, I think such 6-month period is reasonable. Let me state that most corporations today keep a close watch of the foreign patents and usually within 2 years of the filing of U.S. Patent application a foreign patent issues or is made avail
able for inspection—I am talking now about in France, South Africa, or Australia—sometimes it takes 212 years. It used to take about 15 or 18 months. We then know which of our competitors have filed what sort of patent applications in this country. It would be cheaper and better and quicker if we could ascertain the same information by this provision for early publication.
So far as deferred examination is concerned, I am in favor of it for two reasons—first of all, many patents are filed as a protective measure, as shields. We are concerned about whether somebody else may at a later time take out a patent on one of our own developments and so we file a patent application only for the purpose of protecting ourselves against a patent suit brought by someone else who later on makes the same improvement. If we were to file an application and it were to be published within 6 months, then we would be sure that 1 year later or 18 months later that no one else could file a patent application covering that same subject matter and obtain a valid patent.
Other patent applications are filed orginally in the hope and expectation that they represent a real advance in the art, but after a year or 2 of further experience we find that we were mistaken. Now if there were a deferred examination, we would probably allow those applications to lapse by failure to request an examination.
In both of those instances, deferred examination would save the Patent Office the problem of examining applications in which applicants really have no interest and I am sure there are many thousands of such applications filed each year. This result would give the Patent Office more time to turn their attention and their examining time to those applications in which the public and the parties are really interested. So I urge that there be early publication and deferred examination which will save the parties' time and will save the Patent Office's time. In that way the public interest will be served.
There are many things I would like to talk about but at this time I would rather answer some questions.
Oh, I have one point which I want to speak to also. It came up yesterday. It was a question of whether we should have “patent” courts. Senator Hart stated that he preferred “generalists" and I heartily second that opinion. I think it would be a great mistake to have specialized patent courts to determine patent matters. The present Federal courts are capable of doing the job provided there is adquate advocacy by counsel for both sides. I think that a Federal judge can handle the technical problems of patent litigation just as well as he can, for example, handle the medical problems that come up before him in personal injury litigation or the complex problems involved in SEC litigation. The legal and technical problems in patent cases are not overwhelming and I cannot conceive of a specialized patent court that could do as good a job as our present courts. Furthermore, I think that a specialized patent court system would eventually create its own little world withont access to the public and I would much rather have Federal judges throughout this country handle the patent laws; and develop the application of the patent laws in the interest of the public than to have an ingrown